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Black Raven might not have a trademark, but they don't intend to ditch the name

***This post was originally posted on BreweryLaw.com, the nation’s first, and maybe the only, blog devoted to beer law! The blog is published by Reiser Legal, LLC, a Seattle, Washington law office. Reiser Legal’s Douglas Reiser is our regular legal columnist.***

The challenge was brought by Franciscan Vineyards, who holds trademarks for wine and related products identified by the names “Ravenswood” “Ravens” and “Ragin’ Raven.” These names are associated with its Ravenswood Winery label that produces a large volume of wine in the United States.

There are a few things that really struck me about this case. The first is that this ruling comes at a time when Black Raven Brewing Co. is flying high, gaining every recognition in the brewing world, and putting a major dent in the Seattle craft brewing market. This is the same brewery who recently took home 3 medals at each the North American Beer Awards and the World Cup of Beer. They are on a roll.

But, after taking a look at the pleadings filed in the United States Patent and Trademark Office’s Trial and Appeal Board, I noticed that the challenge came up way back in January 2008.

Secondly, this was no easy challenge for Franciscan. They moved for summary judgment back in December 2008 and claimed that wine and beer were almost interchangeable, that the channels for sale were similar, and that the mark was confusingly similar. The court rejected this analysis, stating that Franciscan had failed to meet their burden of proof.

The Court proceeded to set the matter for trial. Several motions to strike were filed in 2009 that prompted a delay in the trial of the matter. But, the matter proceeded with briefing early this year; trial was held on the briefs and the decision issued this month.

Third, the Court refuses to sever the beer and wine industry. At times in its decision, its clear that the Court believes that they are virtually interchangeable. The Court provides:

Indeed, when the proper evidence has been made of record, the Board’s precedential authority specifically holds beer and wine are related products….

In sum, the factors relating to the goods, namely the similarities between wine and beer, the identity in trade channels and prospective purchasers, and the conditions of sale weigh in favor of a finding of likelihood of confusion.

This appears to be the first time that the trademark court has had to decide on a similar mark between beer and wine. They did cite the findings of a case between beer and tequila and one pertaining to malt liquor and tequila. But, the Court did not appear to draw any inferences from a similar beer and wine showdown.

This is an important distinction. This country has a glut of wine and beer producers. Many have extremely similar names (i.e. Stone Cellars v. Stone Brewing; Fat Cat Beer v. Red Cat Wine; Sea Dog, Laughing Dog, Lazy Dog, Spotted Dog and whole mess of other dog breweries and wineries). This could open the floodgates for more challenges in between these two industries.

Fourth, the Court used a strip down technique to tear away what it perceived to be generic terms. The Court stripped off “brewing company” and focused its attention on “black raven” v. “ravens”:

In the case of applicant’s mark, BLACK RAVEN clearly dominates the BREWING COMPANY portion. The generic words BREWING COMPANY are disclaimed, and, although we have compared the marks in their entireties, these words play a subordinate role in the mark.

The most important discussion of the word “raven” was in looking to the dictionary definition, which provided that the addition of the word “black” was essentially superfluous, not differentiating the two terms:

The marks share the word RAVEN (the plural form in opposer’s mark) and, thus, look and sound similar.

As for meaning, the term “raven” is defined, in pertinent part, as “a large, black, omnivorous and occasionally predatory bird; glossy black.” The New Lexicon Webster’s Dictionary of the English Language (1987).

Applicant’s promotional materials show that its logo depicts a black bird, as does opposer’s advertising materials. We find that RAVENS and BLACK RAVEN convey substantially similar, if not virtually identical meanings. Although the addition of BREWING COMPANY in applicant’s mark informs prospective consumers that the entity is a brewery, the evidence indicates, as discussed above, that beer and wine may emanate from the same entity.

So, its a crushing blow for Black Raven Brewing Co., but they are not out of options. They are entitled to appeal this decision in the future.

Initial accounts from Beux Bowman, the owner of the brewery, are that the brewery is not going to relinquish use of the name. Who can blame them? The young brewery has sunk an incredible amount of time, money and effort into building up a successful and well-known business icon.

It is very possible that Franciscan will approach the brewery about a licensing arrangement, which would permit them to use the mark, for a price. This is a typical goal of the trademark opposition procedure.

Whatever, Black Raven decides to do, we hope they continue building an incredibly successful brewing operation here in Washington state. Hopefully, the mere fact that they were a part of this dispute only provides additional marketing opportunities.